Navigation

Judge Robinson denied today a motion for separate trials on two asserted patents, and for a stay as to one of those patents pending the outcome of an appeal to the Board of Patent Appeals and Interferences (“the Board”). Leo Pharma A/S v. Tolmar, Inc., Civ. No. 10-269-SLR (D. Del. Apr. 25, 2012). In this ANDA case, the plaintiff appealed to the Board the PTO’s rejection of all asserted claims of the ‘013 patent, and represented to the Court that if the Board upheld the PTO’s rejection, an appeal to the Federal Circuit would follow. The defendant argued that the plaintiff’s true motive for the “eleventh hour” motion (discovery was completed and trial was to begin in about two months) was improperly to prolong the 30 month stay under the Hatch-Waxman Act and, further, that the resources of both the Court and the parties would be wasted if separate trials were held on the related patents. The plaintiff, for its part, countered that denying the motion to stay would result in wasted resources because the outcome of the Board appeal (which would post-date the end of trial) likely would narrow the asserted claims tried to the Court. Judge Robinson denied the motion, and explained, “[b]ecause this is a bench trial, the evidence and arguments presented by the parties can be supplemented if need be. Since neither party is willing to abide by the decision of any forum other than the Federal Circuit, this court will do what it is supposed to do, try the case.”

Featured Posts

Following a successful inception in 2014, Premier Cercle™ is teaming up with Institutional Investor Magazine and Managing Intellectual Property to organize a sequel of the IP Finance Conference that will showcase and discuss the best practices from patent holders, entitled, investors, bankers, financiers, Private Equity, firms, regulators, plaintiffs and defendants which make the most of […]

As we previously reported, the Delaware Chapter of the Federal Bar Association and the District of Delaware will hold the first Bench and Bar Conference in Wilmington, Delaware on May 7-8, 2015. Participants can register HERE. The Conference offers 9 hours of CLE credits, featuring district and appellate judges from across the country, as well […]

The Delaware Chapter of the Federal Bar Association announced today that the first District of Delaware Bench and Bar Conference will be held on May 7-8, 2015 at the Hotel DuPont in Wilmington, Delaware. The event will feature judges from the District of Delaware, Third Circuit, and Federal Circuit; as well as other distinguished speakers. More details regarding the […]

There is still time to register for Managing IP’s third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C. ** Free for in-house patent counsel, academics and R&D professionals ** Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with: • a guide to improving your company’s […]

Managing IP invites you to the third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C. ** Free for in-house patent counsel, academics and R&D professionals ** Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with: • a guide to improving your company’s patent application process […]

Contact Information

Delaware IP Law Blog ("Blog") is intended for informational purposes only and does not contain any legal advice. The authors of the Blog are attorneys in the law firm of Young Conaway Stargatt & Taylor, LLP, and the views expressed by one or more of the authors, including comments posted by registered visitors, solely reflect the opinions of those authors and not those of the firm or its clients. The publication of and posting to the Blog does not create an attorney-client relationship and the authors assume no liability for the dissemination of attorney-client or confidential information posted on the Blog by registered or unauthorized visitors. The Blog is not intended to be advertising of legal services or any other service. The authors assume no responsibility for inaccuracies.

The authors reserve the right to remove any posted content. Content that is illegal, obscene, defamatory, threatening, infringing of intellectual property rights, invasive of privacy, or otherwise injurious or objectionable will be removed.